Definition of a trade mark
A trade mark is a sign used in the course of trade in relation to goods or services, to indicate a commercial connection between those goods or services and the owner of the trade mark.
Businesses use trade marks so that purchasers and users of their goods or services can easily distinguish those goods and services from the goods or services of their competition.
In section 17 of the Trade Marks Act 1995 (Cth) (‘TM Act’), a trade mark is defined as:
[A] sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
In section 6 of the TM Act, a sign is defined as:
[A] sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
This definition is broad and allows for graphics or pictorial trade marks, and other possibilities.
There are many famous examples of pictorial trade marks (e.g. Apple’s ‘apple and bite’ trade mark and, in Australia, Holden’s picture of a lion).
The trade marks of many corporations combine words with pictures. For example, Nike has a registered word trade mark (i.e. the word Nike), and a registered picture trade mark (i.e. the ‘swoosh’ picture). These two trade marks are used separately, and together as the Nike logo.
The purposes of a trade mark
The purposes of a trade mark include to:
- enable the trade mark owner to distinguish their goods and services from those of other traders;
- enable purchasers to identify who makes or provides the goods or services (thus assisting in their decision-making on questions of quality, price and other purchasing considerations).
For a trade mark owner to distinguish their goods or services from similar goods or services, their trade mark must do more than simply describe the goods or services. If the intended trade mark merely describes the product or service, then it is unlikely to be registrable as a trade mark (see ‘Registered trade marks’ in ‘Protecting trade marks‘).
For example, the word ‘tasty’ is unlikely to be registrable as a trade mark in relation to cheese because ‘tasty’ describes the taste of cheese. One trader cannot monopolise the word ‘tasty’ since other traders are likely to want to use the word to describe their own cheese. Also, the word ‘tasty’ does not clearly indicate a connection between the owner’s cheese and the owner, because ‘tasty’ describes cheese generally, not just the cheese from a particular trader.
Registered and unregistered trade marks
A trade mark can exist without being registered. Unregistered trade marks are known as ‘common law trade marks’ (see ‘Common law trade marks and passing off’ in ‘Protecting trade marks‘).
A trade mark can also be registered under the TM Act (see ‘Registered trade marks’ in ‘Protecting trade marks‘).
Trade mark registration is encouraged to:
- allow clearer searching of available trade marks;
- enable trade mark owners to avail themselves of the enforcement rights given to owners of registered trade marks under the TM Act.
Differences between trade marks and names
Confusion often arises about the rights of owners of registered trade marks, compared to the rights of those who register company names, business names and domain names.
It is important to understand that registering a business or company name with the Australian Securities and Investments Commission (ASIC) does not give the registrant enforceable rights in that name.
Since May 2012, the Commonwealth Government, through ASIC, has controlled the names of businesses and companies (which were formerly administered on a state-by-state basis). ASIC requires businesses and companies to register their names in order to be permitted to trade under those names. However, registration with ASIC does not mean that the trader owns that name.
Also, registration does not protect the trader against third-party claims for trade mark infringement (or other legal liability as discussed further below). A trade mark registration is the best way of securing enforceable rights in a trading name and protecting against trade mark infringement.
A company name is created when a company (also known as a corporation) is incorporated. The Corporations Act 2001 (Cth) applies particular legal requirements to corporations. Incorporation is indicated by the use of the abbreviations ‘Pty Ltd’ or ‘Ltd’ after the company’s name. ‘Pty Ltd’ is an abbreviation of ‘Proprietary Limited’. ‘Proprietary’ indicates a privately owned corporation. Another form of incorporation is as a public company. Public companies are indicated by the abbreviation ‘Ltd’. Public companies are generally owned by a larger number of shareholders than is permitted for proprietary companies (proprietary companies must have no more than 50 non-employee shareholders, while there is no limit on the number of shareholders of a public company).
When selecting a company name, check if that name is already registered as a company name (search for company names in ASIC’s registers) or as a trade mark (see ‘Searching for registered trade marks’ in ‘Avoiding infringement of a registered trade mark‘). If a name is already registered, another name must be chosen. This means that registering a company name prevents another person from registering the same name. However, it may not prevent a deceptively similar name from being registered (e.g. registering the name ‘ABC Company Pty Ltd’ may not prevent ‘ABC Corporation Pty Ltd’ from also being registered). Each company has a unique Australian Company Number, which can assist to accurately identify a particular company.
A business name is the name a trader conducts business under. Registering a business name is a compulsory statutory requirement if a natural person wishes to trade under a name that is not their own. If a person trades under a name that is not their own and has not registered the name as a business name on ASIC’s Business Names Register, they are in breach of section 18 of the Business Names Registration Act 2011 (Cth).
For example, if Fred Brown establishes a lawn-mowing business known as ‘Fast Fred Mowing’, he is required to register the name ‘Fast Fred Mowing’. Alternatively, if he wishes to trade under the name ‘Fred Brown’ then registration is not required, because this is his own name.
Further, if ‘Fast Fred Mowing’ has already been registered by Fred Black Gardening Pty Ltd, then Fred Brown will not be able to register that identical business name. However, he could register ‘Fast Fred Gardening’, since registering a business name does not give Fred Black Gardening Pty Ltd any rights over ‘Fast Fred’ or ‘Gardening’.
As discussed below (see ‘Common law trade marks and passing off’ in ‘Protecting trade marks‘), rights in trading names may arise under common law from using a name as a trade mark and rights may additionally be obtained by trade mark registration. This is important to understand, because many small business traders believe that registering their business name is sufficient protection, enabling them to have sole control and exclusive use of that name.
However, if another trader already has enforceable trade mark rights for a deceptively similar business name, a mere business name registration will not protect the new trader from possible liability for trade mark infringement (or other legal liability such as for misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth) or the tort of passing off). Nor will it prevent a third party from registering and using a similar name, as noted in the examples above.
When choosing a business name, avoid similarities to existing names. Having a distinctive name may help a business protect their name against infringement.
New traders are advised to check for any registered or unregistered (common law) trade marks when choosing a business name. Registered business names can be searched in ASIC’s registers.
Registering a domain name does not, in itself, protect the registrant from trade mark infringement liability (or liability for misleading or deceptive conduct, or passing off) if another trader already has registered the trade mark or has common law rights in the mark. It is important to check that another trader does not already control a domain name and that use of the proposed domain name does not infringe another trader’s registered trade mark or give rise to liability for misleading or deceptive conduct or passing off.
Due to changes in AuDA rules that came into effect on 12 April 2021, ‘.com.au’ and ‘.net.au’ domain names must now be more closely linked to the name of the domain name holder or to an Australian trade mark owned by the holder.
Previously, domain names only had to be ‘closely and substantially connected to the registrant’, which included abbreviations of a trade mark owned by the holder. Now, ‘.com.au’ and .’net.au’ domain names must match the trade mark by using words or numbers in the same order that they appear in the trade mark without any additional words or numbers.
If the holder is not based in Australia and is also relying on the Australian trade mark to establish a presence in Australia, the domain name must match the trade mark exactly — including all the words being in the order in which they appear in the trade mark. Some exceptions apply in both cases in relation to commercial identifiers (e.g. Pty Ltd), punctuation marks, certain words common to trade marks (e.g. ‘a’, ‘the’, ‘and’ and ‘of’) and ampersands (i.e. &).
This means that formerly licensed domain names may not be entitled to be renewed if they do not comply with the new, more stringent qualification requirements.
See also ‘Domain names and cyber-squatting’ in Chapter 7.5: The internet and the law.